Trademark For Amazon Brand Registry

Amazon’s Brand Registry is an important tool for intellectual property protection of
Amazon sellers. Amazon sellers with independent brand names are now able to protect
those brands names (at least on the Amazon platform) by registering the
seller’s brand name with Amazon’s Brand Registry. To register your brand name with
the Amazon Brand Registry, the seller must supply trademark information about
the brand.

Until recently, Amazon required only that the seller supply Amazon with the trademark
application number. At the United States Patent and Trademark Office (the USPTO),
this number is referred to as the Trademark Application Serial Number. This allowed
Amazon brand owners to have their brands filed as trademarks at the United States
Trademark Office and then immediately use the Trademark Application Serial Number
to have their brand registered on the Amazon Brand Registry. Because the USPTO
provides the Trademark Serial Number immediately upon submission of a trademark
application, this meant that Amazon sellers could register their trademarks with the
Amazon Brand Registry on the same day their trademarks were filed with the
Trademark Office. 

Unfortunately for Amazon brand owners, that is no longer the case. Amazon’s current
policy is that only registered trademarks are eligible for protection on the
Amazon Brand Registry. Because Amazon will only recognize brands that are
actually registered trademarks (not merely filed trademark), brand owners are now
scrambling to get their brands registered as proper trademarks at the United States
Trademark Office. 

Obtaining a trademark registration these days is taking between 8 and 13 months (as
opposed to obtaining a Trademark Serial Number, which is obtained immediately upon
submission of the trademark application). Consequently, Amazon’s new requirement
that a brand be a registered trademarks to be eligible for the Brand Registry, raises
several issues for Amazon sellers. 
First, Amazon’s new Brand Registry requirement now compels Amazon dealers to plan
well in advance of launching a brand. While the old requirements would
allow brand owners to register with Amazon’s Brand Registry merely upon filing a
trademark application with the United States Trademark Office, the registration
requirement means that, in a best case scenario, the earliest an Amazon brand owner
would be able eligible for protection the Brand Registry would be about 8 months after
filing the trademark application with the USPTO. 
Second, trademark clearance searches are now absolutely critical for
amazon brand owners. To understand why Amazon’s new trademark registration
requirement for Brand Registry necessitates clearance searches before selecting
a brand name, a little background on the trademark registration process is needed. The
following is a watered-down summary of the trademark registration process. (1) A
trademark is filed with the United States Patent and Trademark office. The application
includes the proposed trademark (or "brand") and also describes what products will be
sold under the brand. (You cannot obtain a trademark for a name in a vacuum – it
always needs to be tied to particular products.) (2) About 3-4 months after the
submission of the application, the trademark application is assigned to a trademark
attorney at the USPTO, who reviewed the application for formalities. Importantly for the
purposes of this discussion, the examining attorney conducts trademark conflicts
searches (clearance searches) to ensure that the trademark is available and that it does
not conflict with other earlier filed trademarks. (3) Assuming no conflicts, the Trademark
Office would publish the trademark and then register it, about 8 months after the filing
(assuming the trademark was filed as an IN USE trademark, discussed below).
With Amazon’s old policy, brand owners did not have to concern themselves with the
probability that the Trademark Office would ultimately register their trademark. As long
as a Trademark Serial Number was obtained, that (without anything more) could be
used to get protection on the Amazon Brand Registry. However, now that Amazon
requires a Trademark Registration Number (which is only obtained if the trademark is
ultimately registered), Amazon sellers have no choice but to have proper due diligence
done on their proposed brand names early in the process to avoid refusals and long
delays at the United States Trademark Office.
Third, Amazon sellers are now searching for any way possible to have their trademark
applications expedited at the USPTO, so that a trademark registration number will be
obtained as soon as possible. There is no trademark expedited service for trademark
applications at the United States Trademark Office. However, there are things that can
be done to increase the speed of the trademark examination process, thereby obtaining
a registration sooner. First, having an experienced trademark attorney handle the
trademark application will most often result in obtaining a trademark registration sooner.
Trademark attorneys can often identify seemingly small issues in the application that
can cause significant, multi-month, delays in your registration process. Second, filing
your trademark as an IN USE trademark (this is called a 1(a) basis for registration)
significantly shortens the registration process. To file your trademark as an IN USE
trademark (rather than an INTENT TO USE trademark), your trademark must actually
be in use and you must have legitimately sold some of the products after you began
using the trademark in connection with those products. As an Amazon seller, filing
a brand as an IN USE trademark is not difficult and should be considered in order to
save significant time on the registration process. While there is no set amount of time,
we estimate that filing as IN USE instead of INTNT TO USE will cut at least 3 months off
of the registration timeline. (Of course, there are reasons why you may wish to file your
trademark as INTENT TO USE instead of as IN USE.) Finally, to avoid delays at the
USPTO it is extremely important to properly word your description of goods. A huge
number of applications are significantly delayed because of very small issues relating to
the description of products – and these issues are often not intuitive and are unlikely to
be recognized by non-trademark attorneys. 
Amazon’s Brand Registry offers a great way of protecting your brand on the Amazon
platform. With Amazon’s new requirement, you must provide a registration number (not

merely an application number) to get Brand Registry protection. Because of the many
potential hurdles in the trademark registration process, brand owners now need to move
quickly and early to obtain a trademark registration. In addition, delays at the Trademark
Office are now much more detrimental to Amazon brand owners, as they can only get
their brands on the Brand Registry when they complete the registration process and
obtain a registration number. Obtaining experienced legal counsel for the trademark
clearance and application often saves many months of delay and is highly
recommended if your objective is to obtain a registration as soon as possible.

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